May 30, 2023
Last Revision Date
Office of Research
This Marymount University Intellectual Property Policy (the “Policy”) applies to all faculty, staff, students, independent contractor and consultants at the University (collectively referred to as “Covered Individuals”).
The policy is intended to establish fairness and consistency across the campus, regardless of the individual(s) involved, type of intellectual property right, or the medium used to create the intellectual property.
Marymount University (the “University”) encourages the production and dissemination of original creative and scholarly research, artistic work, and innovative invention, known broadly as intellectual property, because it supports the University’s mission and invigorates our campus environment. In this policy, the University maintains academic freedom but also fosters a culture that considers the rights and obligations of all individuals connected to intellectual property.
Intellectual property is created by individuals, or by groups of individuals, who are entitled to choose the timing and method of disclosure or display of the property and to protect the property from abuse and misuse. The products arising out of these creative, artistic and innovative works may create rights and interests on behalf of the creator, author, inventor, sponsor, and the University. These rights and interests can be shared with others, including through licensing agreements. The aim of this policy is to clarify relationships to the benefit of all persons and entities involved in specified intellectual property.
A bundle of rights in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. For example, literary works, musical works, artwork inserted into a slide deck, photography, choreography, paintings, scripts, computer source code, and compiled data.
Full-time and part-time employees of the University as defined in the Employee Handbook.
1.3 Independent Contractors and Consultants
Non-employees working with the University on specific projects and compensated through a contract.
Is meant to cover tangible or intangible invention, including but not limited to any device, discovery, process, method, machine, manufacture, composition of matter, or improvement thereof, which is or may be patentable, whether or not reduced to practice.
An individual or individuals who conceives and demonstrates proof-of-concept, reduces to practice, or otherwise establishes the novelty and utility of an Invention.
The creator of a work retains ownership to the Work but gives another person or entity permission to use some or all of the Work. The license can include conditions prior to grant of the permission and limitations on the actual use, such as time limits or geographical area restrictions.
New and useful inventions or improvements; for example, any new and useful process, machine, manufacture, or composition of matter so long as they meet the conditions of the United States Patent Act.
Amounts paid to the owner in exchange for the right to use the Invention, giving the owner the benefit of an income from the intellectual property.
1.9 Scholarly Works
Works authored by Faculty as part of, or in connection with, their responsibilities, if any, in teaching, research, or scholarship. Common examples of Scholarly Works include: lecture notes, case studies, course materials, books, book chapters, works of nonfiction, journal articles, scholarly papers, poems, lyrics, musical compositions and recordings, architectural drawings, software, visual works of art, and other artistic creations, among others, regardless of the medium in which those works are fixed or disseminated.
1.10 Sponsored Works
Works authored or created pursuant to external funding by an external donor or corporate collaborator, and other similar relationships.
Full-time and part-time Employees of the University, as defined in the Employee Policies.
Individuals enrolled in the University, whether on a full-time or part-time basis.
1.13 Student Works
Works authored or created by a Student in their capacity as Students, including creative works produced by students in fulfillment of class assignments.
1.14 Substantive Use of University Resources
Extensive unreimbursed use of institutional labs, studios, computer network and its data, and human resources specifically for the creation of the Work. Routine use of university resources commonly available to Faculty are not considered Substantive Use of University Resources.
A word, phrase, symbol, or design that identifies and distinguishes the source of the goods or services of one party from those of others.
Literary, dramatic, artistic, audio-visual, and musical material or works, and other works that would qualify as having intellectual property, whether or not subject to Patent, Copyright, or Trademark laws.
1.17 Works Made for Hire
Defined by the Copyright Act (17 U.S.C. § 101of the U.S. Code) in two parts: (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use: (a) as a contribution to a collective work; (b) as a part of a motion picture or other audiovisual work; (c) as a translation; (d) as a supplementary work; (e) as a compilation; (f) as an instructional text; (g) as a test; (h) as answer material for a test; or (i) as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
- Students own the copyright to the Student Work they author or create in their capacity as Students at the University unless otherwise stated in this Policy or there is a separate written agreement specifying ownership. This includes, but is not limited to papers, artwork, presentations, and other academic work products. It also includes flyers, presentations, articles, artwork and other work products created in connection to a student organization, student affairs activity, or campus event. Student ownership also includes in-person contributions in a class or contributions to an online discussion.
- To ensure that everyone has a meaningful opportunity to participate in the educational process occasioned by the production of such Student Work, Students agree not to distribute such Student Work in any manner, whether by sale or other transfer of the ownership or other rights, license, lease, loan, gift, or otherwise, except for entering such Student Work in festivals or competitions, until after the end of the semester in which the Student Work was completed.
- Students grant the University a non-exclusive, perpetual royalty-free license to use, reproduce, publish, perform, display, or distribute the Student Work for educational, research, internal, archival, or administrative purposes consistent with the University’s educational mission.
- Students agree to not make any contract or commitment regarding the Student Work contrary to this Policy or in derogation of the rights granted to the University by this Policy, and that Student will sign any document reasonably requested by the University to confirm or enforce any of the rights granted to the University by this Policy.
- Work produced by Students as university employees, either as a work-study or regular employee, as part of their assigned duties is owned by the University.
- If a Student is involved in assisting faculty with producing Scholarly Works, the Faculty should have a written agreement with the student that clearly states the copyright interest of the Student in the Scholarly Work. If the Student is a significant contributor to the Scholarly Work then the assumption is that they should be considered as a co-author, co- inventor, or co-creator and share appropriately in rights to the Scholarly Work.
- Works created by Staff within the scope of their employment are “Works Made for Hire,” unless the there is a written agreement between Staff member and the University.
- Scholarly Works produced by Faculty are owned by Faculty, unless specified by this Policy. When multiple Faculty members create a Scholarly Work, the faculty members will be joint copyright owners of the work unless there is a written agreement to the contrary. The following are exceptions to Faculty ownership of Scholarly Work:
- Scholarly Work created with Substantive Use of University Resources shall belong to the University unless there is a written agreement stating otherwise.
- Scholarly Work is produced pursuant to the terms of a written agreement, the agreement shall specify ownership.
- Faculty members grant the University a non-exclusive, perpetual royalty-free license to use Scholarly Works created for teaching for educational, research, internal, archival, or administrative purposes consistent with the University’s educational mission, including but not limited to satisfying requests of accreditation agencies for documentation, providing examples during Faculty development workshops, models for course construction and organization, and hosting in institutional repositories. In an agreement transferring intellectual property rights for Scholarly Works to a publisher, Faculty authors are urged to seek to provide rights for the University to use such Works for internal instructional, educational, and administrative purposes.
- Any Work by Faculty, excluding Scholarly Work, that is made at the express direction of a supervisor, prepared pursuant to specific provisions incorporated within a position description, or prepared in the performance of any administrative duty shall belong to the University. Such Work includes but are not limited to master course descriptions, syllabi language, student-learning outcomes, policies, accreditation materials, committee reports, and departmental reports, all of which are owned by the University.
- The University requires a written collaboration agreement for all externally funded or sponsored Faculty research projects. Ownership of any Work created or produced shall be determined by the written agreement. .
2.4 Independent Contractors and Consultants
- Work produced for the University by Independent Contractors and Consultants shall be considered Work for Hire and shall be owned by the University.
- The University owns all trademarks that are used to identify itself and/or its programs and activities. Examples include usage of trademarks on apparel, print publications, souvenirs such as glasses, cups, key chains and the like.
- Faculty and Staff may use the University’s trademarks where necessary to identify themselves on matters of official University business or sponsorship of a University activity or event. Students may use University trademarks with the express written permission of the Office of Marketing and Communications.
- All such uses must follow this Policy and the visual identity guidelines set forth in the Marymount University Style Guide (https://my.marymount.edu/Offices-Resources/Communications-Marketing/Brand-Guidelines-and-Official-Logos). Note that use of the University Seal is not permitted except by specifically-designated University officials.
- Use of trademark for non-University purposes is limited to identification of and by the Faculty or Staff (e.g., “Jane Doe, Professor of Communication, Marymount University”). Marymount University names, logos, and other trademarks shall not be used by individuals or entities otherwise in a manner that implies University endorsement or responsibility for particular activities, products, or publications involved, or by any individual or group promoting itself, without the express written permission of the Office of Marketing and Communications.
- In addition, use of the University’s name, logo, seal and other trademarks for commercial purposes is prohibited unless approved in advance by the Office of Marketing and Communications.
- The University has no vested interest in Inventions discovered by Faculty, Staff or Students without the Significant Use of University Resources. In addition, ownership of any Invention under any externally funded or sponsored research project will be determined by the written agreement.
- Faculty, Staff, and Students shall promptly report and disclose any Inventions in detail to the Provost or their designee in writing to determine the degree of University interest. The Provost or their designee shall inform the Faculty, Staff, or Student of the decision on whether the Invention should be owned by the University, and/or if all rights, title and interest in the Invention need to be assigned to the University. If the Faculty, Staff, or Student disagrees with the Provost’s or their designee’s decision, they may file a written appeal to the Intellectual Property Committee (“IPC”) within fourteen days (14) days after the Provost’s or their designee’s determination as set forth in Section IV(D).
- If the University determines that it has no interest in an Invention or decides to forego the patenting of an Invention, or fails to file a patent application within six (6) months from the date of submission of the patent disclosure to the University, it shall be deemed to have waived its rights to the Invention. Only as a service, and not as an obligation, the University then may provide assistance to an Inventor in pursuing a patent.
- If the University determines that it does have an interest in an Invention, the Inventor shall cooperate in the disclosure, patenting, development and licensing of any Inventions with which he or she was involved and in which the University has an interest. In addition, all Covered Individuals agree to promptly execute such documents of assignment of patent title as are necessary at the time a patent application is submitted to the U.S. Patent Office and to do everything that may be reasonably required to assist all assignees to obtain, protect, and maintain patent rights.
- The University may transmit the Invention disclosure to a patent development organization to obtain an evaluation of the Invention. Contacts between the Inventor and patent development organization are coordinated by the IPC. This organization may transmit Invention disclosures to the Federal Government where the terms of the grant or contract so provide, and will be cognizant of any special requirements of granting or contracting agencies.
- When it is determined an Invention in which the University has an interest requires development beyond the capability or proper function of the University, the University may secure such development through appropriate agreements with outside agencies. If an Invention is deemed appropriate to apply for a patent application, the agency and the University may determine that it is in the best interests of the University to be responsible for the patent application and management. In such cases, the cost of the patent application and related activities leading to active licensed production shall be paid from University funds and these costs shall be a prior charge to any royalty to be recovered.
- The IPC will make recommendations relative to committing the University to the grant of exclusive or non-exclusive licenses as a condition of sponsorship for particular research projects.
- The University and Investor will share royalties for the Invention as follows:
|Net Royalty Income||Inventor||University|
|$0 – $10,000||100%||0%|
Net royalties are defined as gross royalty income less actual expenses incurred by the University in administration of the Invention, including but not restricted to legal fees, patent maintenance fees, and marketing expenses. In addition, royalty payments related to Inventions developed with the assistance of federal funds will be subject to any limitations on the division of royalties imposed by the funding agency. Any exceptions to this royalty distribution must be agreed to in writing by the University and the Inventor.
5.0 Intellectual Property Committee
- The University shall establish an Intellectual Property Committee (“IPC”) appointed by the University’s Provost, which oversees this Policy. The IPC has primary responsibility for the periodic review and ongoing administration of this Policy, including the authority to address questions relating to the creation, use, ownership, and licensing of a Work.
- The IPC will initially address disputes arising under this Policy between one or more Covered Individuals, including disputes regarding ownership or use of Works and the distribution of licensing income. In cases of dispute or particular cases that are more complex or novel, the IPC will review the matter and make a preliminary report and recommendation regarding the responsibilities, rights, and ownership of the intellectual property in question, and issued in writing to the President and to the creator/author/owner. The President will review the findings of the IPC and make a final determination in writing.
- Nothing in this Policy shall be construed to preclude the University and Faculty, Staff, and Students from entering into written agreements governing the use, licensing, or sharing of licensing revenues with each other with respect to Works and Inventions.
- The University reserves the right to modify this Policy, normally resulting from recommendations from the IPC; authority to change this Policy rests with the Provost.
Several portions of this policy have been adapted with permission from the following institutions’ intellectual property policies: Catholic University, Georgetown University, College of William & Mary, Washington and Lee University, and the American Association of University Professors.